Chinta & Fratangelo LLP

The reissue procedure is prescribed by 35 U.S.C. § 251, which permits a patentee to seek a review of a granted patent on the grounds that the patent is inadvertently defective due to an error in conduct which was made in the preparation and/or prosecution. The patent must be “wholly or partly inoperative or invalid by reason of a defective specification or drawing, or my reason of the patentee claiming more or less than he had a right to claim.”  With regard to the error requirement, the position of the USPTO is that the statute requires the patentee to show an error rendering the granted patent wholly or partly inoperative or invalid in order to obtain a reissue patent.  MPEP §§1401–1402.  A reissue application that seeks to broaden the originally granted claims must be filed within two years of the grant of the patent.

In In re  Tanaka, No. 2010-1262 (Fed. Cir. 4/15/2011), the patentee timely filed an application to broaden the allowed independent claim, but during prosecution, he abandoned that attempt and instead sought to obtain a new dependent claim, without making a substantial assertion of an “error” (within the meaning of the statute) in the existing claims.  The applicant stated the he was inexperienced in US patent law, and wanted to hedge against a future claim of invalidity by adding a new dependent claim. The examiner rejected the reissue application, saying that the asserted error was not correctable by reissue.  The examiner was affirmed by a precedential decision of the BPAI, Ex parte Tanaka, No. 2009-000234 (B.P.A.I. Dec. 9, 2009).  The Board held that the statute “disallow[s] reissue applications that simply add narrow claims to the reissue patent when no assertion of inoperativeness or invalidity for the reasons set forth in § 251 can be made by the patentee….”

The Federal Circuit panel (Byrson, Linn, Dyk, opinion by Linn, dissent by Dyk) reversed the BPAI, taking a much more expansive view an allowable “error.”  The key issue for the panel was whether there was deceptive intent.  Essentially, a narrowing amendment can be made through a reissue application, even if the reason was to hedge against a potential (future) invalidity claim. The panel also rejected the PTO’s assertion that there was no error under § 251 because the patent was still operative without the new dependent claim.  Dependent claims are narrower than independent claims, so the omission of a dependent claim can “render a patent partly inoperative by failing to protect the disclosed invention to the full extent allowed by law.” Slip op. at 9.  Since there was no deceptive intent here, the panel reversed and remanded.

Judge Dyk dissented, saying the prior cases relied on by the majority do not address the issue in this case of whether a single new dependent claim is a proper basis for reissue.  Dyk therefore asserts that this is a new issue, and he would have sided with the PTO.  Dyk relied on Gage v. Herring, 107 U.S. 640 (1883), in which the patentee unsuccessfully sought to retain the original claims with a new broader claim in a reissue application.  Dyk also cited Miller v. Bridgeport Brass Co., 104 U.S. 350, 355 (1881), which held that reissue was not appropriate where the error was a “mere error of judgment” and not an “actual mistake.” Tanaka, by retaining the unamended original claims is therefore admitting no error in the original patent, so Dyk would hold that reissue is unavailable in this case.